Appeal No. 2006-0102 Page 17
Application No. 09/732,439
Since there is no evidence on this record that every limitation of
appellants’ claimed invention was disclosed in either Verma I or Verma II prior to
appellants’ effective filing date the anticipation rejection of record cannot be
maintained. Accordingly, we reverse the rejection of claims 59-61, 63, 72 and 73
under 35 U.S.C. § 102(e), as being anticipated by Verma II.
Obviousness:
Claims 59-63, 72 and 73 stand rejected under 35 U.S.C. 103, as being
unpatentable over the combination of Verma II and Rayapati.
The examiner relies on Verma II as set forth above. Answer, page 13. As
discussed above, Verma II does not disclose a transformed monocot prior to
appellants’ effective filing date. Further, the examiner finds (Answer, page 13),
Verma II does “not teach a DNA segment encoding an amino terminal chloroplast
transit peptide.” The examiner relies on Rayapati to make up for the deficiencies
in Verma. Id.
According to the examiner (Id.), Rayapati “teach that the proline
biosynthetic enzyme Δ1-pyrroline-5-carboxylate reductase (Δ1-pyrroline-5-
carboxylate synthetase) is localized in chloroplasts (page 582 column 2 last
paragraph through page 583 column 2 second full paragraph).”3 For clarity, we
note that the chloroplasts were isolated from “Peas (Pisum sativum L. var
Argenteum)” – a dicot. Rayapati, page 581, column 2, “Plant Material.” We do
3 In addition, the examiner finds (Id.), “[a]ppellants teach that DNA segments encoding amino
terminal chloroplast transit peptides were well-known and used in the plant transformation art at
the time of Applicant's invention (page 39 lines 7-9).”
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